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In 2018, Bayer
Intellectual Property GmbH ("Bayer') geared up for a battle against Villa Crop
Protection (Pty) Ltd ("Villa Crop') in the South African Patent Court. Bayer
alleges that Villa Crop infringes its South African patent, ZA 2005/00230 (the
2005 patent). The 2005 patent claims spirotetramat, as an active substance.
Spirotetramat is used in Bayer’s plant protection product, Movento, as well as
Villa Crop’s competing product, Tivoli.

At this point it might seem
obvious who the winner in this battle will be, but an error and unclean hands
might very soon turn the tables…

First move: Bayer

Bayer made the first move: an
application for an interim interdict (injunction). If granted, Villa Crop would
have effectively been taken out of the market for the duration of the court
proceedings, which could run for a number of years. However, Bayer’s
application was defective. Some of their statements in support of the interim
application were not deposed to (i.e., not attested to in front of a commissioner of oaths).Without
affidavits Bayer could not prove its case but, because it did not go on oath to
explain the misstep, its attempts to introduce belated affidavits failed and the
interim interdict was not proceeded with. Bayer lost the first move. The judgement is available here and Villa Crop's heads of argument can be viewed here.

Second move: Villa Crop

Villa Crop then applied for leave
to amend its plea by introducing a special plea that Bayer approaches the Court
with unclean hands. Its application was opposed by Bayer.

Need to keep these hands clean!

The basis for Villa Crop's amendment went back into the history of Bayer's protection for spirotetramat. Bayer’s 2005 patent has a
priority date of 11 July 2005. Bayer claims, in their particulars of claim,
that the 2005 patent has “at all material times” been valid and in force. To be
valid, spirotetramat as claimed in the 2005 patent, must have been a novel
compound, therefore, not known to the public, at 11 July 2005. At the time of
applying for the 2005 patent, Bayer filed a declaration in support,
stating that they believed that there were no grounds for revocation of the
patent i.e. that, inter alia, the compound as claimed, was new.

It must be kept in mind that
South Africa does not have substantive examination of patents. Patents are examined on
formal grounds only. The South African patent system relies on the integrity of
the applicant and the assisting patent attorney for some measure of “quality
control”. The declaration referred to above aims to keep the system honest and
as a “filter” to lessen the load on the Patent Office.

Bayer has another, earlier, patent
for spirotetramat, being European patent number EP 0 915 846 with an
international filing date of 23 July 1997 ("the ’97 patent"). The ’97 patent also
claims spirotetramat. Bayer obtained supplementary protection certificates
(SPC’s) in respect of spirotetramat as disclosed in the ’97 patent. In doing
so, it, inter alia, identified Movento as the commercial product
containing spirotetramat. In other words, so Villa Crop argues, Bayer, in its
applications for SPC’s, made disclosures incompatible with its subsequent
claims in South Africa that spirotetramat was new at the priority date of the
2005 patent. Villa Crop’s attitude is that Bayer should not be permitted to advance a case in South Africa, in
respect of spirotetramat which contradicts the case it advanced in respect of
spirotetramat before numerous countries in the European Community.

Why this matters

The outcome could mean that patent applicants in South Africa would have to take care to ensure that in complying with their duty of good faith when filing patent applications they have regard for any disclosures made globally, including by way of patent and SPC applications in other jurisdictions.

3 comments:

This may be a stupid question but...Does anyone know why the 2005 patent for spirotetramat doesn't simply lack novelty over Bayer's own earlier disclosures (through the 1997 patent and the SPC) of spirotetramat? Is there an added benefit in arguing "unclean hands" over simple lack of novelty? (Non-SA practitioner here)

Certainly no stupid question, and you are correct that Villa Crop’s argument on validity includes the plea is that the 2005 patent lacks novelty over Bayer’s own prior disclosures (the 1997 patent and the SPC). Villa Crop argues both lack of novelty and “unclean hands”. The benefit in the unclean hands argument lies therein that it is raised as a point in limine. In other words, should it succeed, the doors of court close for Bayer and there is no need to go into enquiries about validity. The trial could in that way, be significantly shortened. The two enquiries are different. In limine, it is simply whether Bayer made statements in support of its SPCs which are destructive of its allegation of validity of the 2005 patent. The novelty enquiry is, of course, a different matter.

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